July 31, 2020
Trademarks are a type of commercial speech. The presence of a trademark on a product assures the marketplace that all goods bearing the mark come from the same source and are of uniform quality. To many, the term “trademark” refers to a word, phrase, or design/emblem that appears on a product or its packaging. While this is true, trademark law in the United States has long recognized an additional category of trademark, called “trade dress,” that protects a product’s packaging, and, in some cases, the product’s design features themselves.
In the U.S., a product’s design can be protected in one of two ways – by a design patent, whose term of exclusivity is 15 years from the date of grant; or as trade dress, whose term of exclusivity is potentially perpetual. The prospect of perpetually foreclosing competitors from copying a product’s design provides a strong incentive for companies to explore trade dress protection for their products. Products ranging from Goldfish crackers to the distinctive elements of a firearm’s design enjoy this type of extended protection.
Protecting a product’s design features under trade dress law is highly desirable, but it is difficult to accomplish. A product’s design features qualify for trade dress protection only if they are “non-functional.” This means that the design features in question may not contribute in any way to the product’s ability to function. (A product’s functional characteristics are potentially protectible under the branch of patent law that affords limited monopoly protection to “utility patents.”) A decision issued on July 27, 2020 by the U.S. Trademark Trial and Appeal Board (“TTAB”) reminds us of the challenges and prerequisites involved in establishing that design features are “non-functional” and hence deserving of trade dress protection.
In re MK Diamond Products, Inc., the TTAB affirmed the U.S. Trademark Office’s refusal to register the three-dimensional configuration of a circular saw blade as trade dress. The Board held that the blade’s “cutouts,” which were a major component of applicant’s trade dress claim, served important functions that allowed the blade to work better – for example, they dissipated blade stress, prevented the blade from warping, and allowed the blade to cut straighter than circular saw blades manufactured by applicant’s competitors.
In reaching this conclusion, the Board identified several factors that must be considered in evaluating whether a product’s design features are functional (not protectible) or non-functional (protectible as trade dress). An answer of “yes” to any one or more of the following questions suggests that the product is ineligible for trade dress protection:
- Has applicant or anyone else sought utility patent protection for the design features in question?
- Have applicant’s advertising materials touted the design’s utilitarian advantages?
- Do applicant’s competitors need to use the design features in order to compete effectively in the marketplace?
- Do the claimed design features make for an easier or cheaper method of manufacturing the product?
Obtaining trade dress protection is not easy. But with careful planning and attention to detail it is possible for firearms manufacturers and others to protect their product’s design through trade dress law. The IP-Trademark Team at Renzulli Law Firm is following this and other developments in intellectual property law. If you have questions about how this or other legal developments may affect you, your products, or your brand, please contact John F. Renzulli.